1. The Parties and their relation to the substance connoted by the disputed domain name
The Complainant is a New Zealand corporation whose founder designed and built the first tractor-mounted forklift to manage awkward tasks on his property in 1960. The company today exports uniquely engineered farm equipment to fifteen countries around the world, with more than 370 Hustler Equipment accredited dealers and over 10,000 farming equipment units working in the field. The Complainant maintains websites in association with numerous domain names, such as www.hustlerequipment.co.nz and states that it has eight other “hustlerequipment” domain name registrations, eight of which are under country code TLDs.
The Amended Complaint and evidence supporting it show the Complainant has established a reputation for the name HUSTLER EQUIPMENT such that it is known by that name to the extent that it constitutes an unregistered trademark quite apart from the arguments that could be advanced based on its registered marks. The effect is to reinforce those arguments.
By contrast, the Respondent has apparently no connection whatsoever with the disputed domain name or the business it connotes. The evidence adduced shows he was formerly registered for the name under the denominator “Vietnam Domain Privacy Services” until the Registrar informed the CAC that the underlying registrant was Mr To Thi Thanh Tam and that he is the registrant of over a hundred domain names, three of which have been the subject of earlier domain name dispute resolution. In all three cases the disputed domain name was transferred and the Respondent entered a response in none of them. The Complainant alleges that the show a pattern of targeting medium sized company trademarks in a similar manner to the instant case.
In relation to the Respondent’s use of the disputed domain name, the Complainant alleged that the Respondent has been using a website associated with it for “pay per click” ads with the likelihood that the Respondent has been harnessing the reputation associated with the Complainant’s brand to deviate traffic and generate revenue for himself. Some evidence was adduced to show that advertisements switched from general advertisements to ones whose links specifically targeted the Complainant’s heavy equipment products. But not too much additional weight can be given to this evidence, given its rather general and ephemeral character.
2. Application of the UDRP criteria for mandatory resolution of disputes
2.1 An identical/confusingly similar domain name to a trademark or service mark in which the complainant has rights
Taking the combination of the registered and unregistered trademarks as discussed above, there can be no doubt that hustlerequipment.com is identical to that combination and so meets this criterion.
2.2 No legitimate interest on the part of the Respondent
The most important aspect here is the fact of registration of the domain name hustlerequipment.com by a third party since August 2004. This in itself cannot defeat a claim by a Complainant; there is no obligation for anyone to register a domain name in order to defend their rights. Indeed, the very purpose of the UDRP system is to protect those rights. However, the Panel must in these circumstances examine whether any legitimate interest may have accrued during a long period, which is here more than a decade, and, to fulfil its duties under the UDRP, it must do so irrespective of whether a Response has been submitted in order to fulfil the Panel's fundamental duty of even-handedness.
In the present case, there is no indication that such an interest has accrued, while the Respondent, in failing to enter a response, has offered no evidence that any of the reasons by way of illustration in the UDRP apply in his favour. To the contrary, all the evidence shows that the Respondent has sought to pursue an illegitimate interest, namely to profit from pay-per-click traffic that was attracted by the reputation associated with the Complainant’s reputation in which the latter has rights that must be protected. The Panel takes due note that the Respondent has furthermore in the past been found to have engaged in typosquatting, a practice premised on the absence of legitimate interest by catching traffic destined for another's legitimate web site thanks only to users’ mistakes.
2.3 Bad faith registration and use
Proof of bad faith domain name registration and use can often only be performed by inference from one or more circumstances rather than by direct evidence, with aid thus being given in the UDRP as to the type of circumstances that will suffice. Intentionally attempting to attract, for commercial gain, internet users to the registrant’s web site by creating a likelihood of confusion of its content with the Complainant's mark is among them.
The presence of this circumstance is indicated in this case against the background introduced in Section 1, above, since, as the Complainant argues effectively: “Had the Respondent just registered HUSTLER.COM, or HUSTLER along with another descriptive word unrelated to the Complainant’s business, there could have been a genuine question that there was perhaps a coincidence or lack of bad faith registration. However, the fact that the Respondent specifically used the word, ‘equipment’ leaves no reasonable doubt other than that the Respondent purposefully targeted the Complainant and its trademarks in the present case”. Furthermore, given particularly the range of online advertising revenue models available, there can be no necessity in this case at least to show an intention specifically to offer competing goods or services to those of the Complainant on the site bearing the disputed domain name.
Other recognized indicators of bad faith can include concealment of identity, as was shown to have been the case until the present proceedings in respect of the disputed domain name. However, the latitude allowed for such concealment under the ICANN system means that the value of the resulting inference cannot be high when taken alone. This is thus a subsidiary element for determining bad faith, while strong and uncontroverted evidence indicating bad faith through creating confusion to divert traffic, as found in the preceding paragraph, suffices to establish a finding of bad faith on the Respondent’s part in the present case.
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